JEREMY'S LLB READING LISTS

Course convenor: Professor Jeremy Phillips (tel. 020 8458 5358; fax 020 8458 0543; mobile 07802 701059; email jjip@btinternet.com; weblog www.ipkat.com).

Please note: I do not have a room in college and I do not live in the little pigeon hole which bears my name. Do not therefore leave any urgent communications in college and do not give my college address when I'm acting as a referee for you unless you don't want any reference written during the vacations. You are welcome to phone me at home (messages left between Friday afternoon and nightfall on Saturday night will be answered as soon as is practicable) or email me. Where necessary, I will make a personal arrangement to see you.

Teaching arrangements: Professor Phillips will be giving the Thursday afternoon classes (4pm to 6pm). Dr Shiva Thambisetty will be giving the tutorials and marking the essays.

Essential reading: The standard book on IP is W. R. Cornish, Intellectual Property (4th ed 1999). This book is excellent, but many students have found that its excellence is best appreciated after a year's intensive study. The Butterworths textbook Intellectual Property Law by J. Holyoak and P. Torremans (3rd ed 2001) is easier to read. Lionel Bently and Brad Sharman's Intellectual Property Law (OUP, 2001) is strong on both detail and analysis, though its size is formidable. There are other textbooks, which I prescribe in individual cases. Get hold of the relevant statutes (the Blackstone and Butterworth student statutes are affordable but incomplete; the Butterworths Intellectual Property Law Handbook is encyclopaedic and therefore too large and expensive for the average LLB candidate).

If all you want to do is to pass the Intellectual Property examination, just read one of the text books a couple of times and understand it. If however you want an education in intellectual property, I suggest that you attend the lectures and the tutorials. This is because I assume that you will be reading the textbooks anyway and I do not want to waste a valuable educational opportunity by repeating in lectures anything you can sit and read at your own leisure.

The lectures may seem a little strange at first, but their cumulative effect adds up to more than the sum of each of the individual classes.

Almost as important as a good text book is a good newspaper. The broadsheets (Financial Times, Times, Daily Telegraph, Guardian, Independent) carry a lot of allusive references to intellectual property in their business, fashion, sports and cultural pages, in addition to the law reports and occasional items of news. Metro is not a broadsheet.

Background reading: don't forget your basic contract, tort and statutory interpretation. If you have hoarded your old lecture notes in these subjects in the unlikely event that you'd ever want to consult them again -- well done. Competition law is also a good background for IP lawyers.

Other reading

All blogs posted on www.ipkat.com must be read. Students are deemed to have constructive notice of all items displayed on it during the currency of their course. Make Ipkat your home page and you'll have no excuse for missing it.

Attitude: This is not a course for students who require spoon-feeding or who dislike interactive teaching methods. Those students who thrive best in my IP classes are those who have a good quantity of natural curiosity, who enjoy asking and answering questions and who don't mind being wrong at least as often as they are right.

Written work: there will be two written assignments, one this term and one next term. Please type your assignments and spell-check them. Please cite cases, articles and statutes in the conventional manner (eg in the style of any of the reputable legal journals). Anyone who has remained in ignorance of these stylistic conventions after spending two years studying law at UCL will soon attract my attention.

Syllabus: First term: Introduction to intellectual property; patents; breach of confidence and trade secrecy. Second term: registered and unregistered trade marks; copyright; designs.

The syllabus is deep. The lectures are superficial. To bridge the gap, read the textbook

PLEASE NOTE: The materials on this list may be supplemented or substituted by other materials in the course of the academic year. They should not under any circumstance be taken as an exhaustive list of citations pertinent to any topic within patent law.

PLEASE REMEMBER: If you make www.ipkat.com your home page, you will automatically pick up a good deal of new patent-related information in the course of the academic year.

Basic sources of UK patent law
Patents Act 1977, as amended, and the Patent Rules
Patents (Supplementary Protection Certificates) Rules 1997
European Patent Convention (as amended)
Protocol on Article 69 of the European Patent Convention

Patent systems
International, regional and national patent protection -- but at what price?
Future proposals: Community patents; Community Patent Court
Luginbuehl, S., "A Stone's Throw Away From a European Patent Court: the European Patent Litigation Agreement" [2003] EIPR 256 to 269
Kingston, W. "What Role Now for European Patent Offices?" [2003] EIPR 289 to 291

Component parts of a patent
Patents Act 1977, s. 130(1)
The specification: a map of the invention
The claim(s): this is where the problems begin
The abstract: for administrative convenience only

Patentability and inventions
The three criteria of patentability: novelty, inventive step and industrial applicability
Why is there so little useful information on inventions in the Patents Act?
Patents Act 1977, ss. 1 to 4

Novelty
Doble, R "Novelty Under the EPC and the Patents Act 1977" [1996] EIPR 511
Asahi's application [1991] RPC 584 (HL): an earlier disclosure or publication must be 'enabling'
Merrell Dow v. Norton [1996] RPC 76: interface between knowledge, discovery and intellectualisation of the inventive process

Inventive step
Haberman v Jackel [1999] FSR 683: any-way-up cup simple but not obvious
IBM/Computer Programs [1999] EPOR 301
Wheatley v. Drillsafe, [2001] RPC 7
Windsurfer v. Tabur Marine [1985] RPC 59: formal steps to identification of the obvious
David J. Instance v. Denny Bros, CA, [2002] RPC 14: is Windsurfer an overrated precedent? Apparently not: see SABAF Spa v MFI Furniture Centres and Meneghetti ca [2003] RPC 14
SEB v De'Longhi Court of Appeal, 4 July 2003 [2003] EWCA Civ 952

Industrial applicability
Patents Act 1977, s. 4
Teva Pharmaceutical v Instituto Gentili SpA [2003] FSR 29

Second use of a known substance
Mobil Friction Reducing Additive G02/88 [1990] OJ EPO 93

Swiss claims
Esai, G-5/83 [1985] OJ EPO 64
Wyeth and Scherings' applications [1985] RPC 545
Bristol-Myers Squibb v. Baker Norton [1999] RPC 253
What is the value of a Swiss claim?

Public policy
Harvard Oncomouse T-0015/90 [1990] OJ EPO 476; EPOR 501
Ford, R "The Morality of Biotech Patents: Differing Legal Obligations" [1997] EIPR 315
Curley, D. and A. Sharples, "Patenting Biotechnology in Europe: the Ethical debate Moves On" [2002] EIPR 565 to 570

Business method patents
Likhovski, Michal "Fighting the Patent Wars", [2001] EIPR 267 to 274
The US State Street decision

Software patents
Vicom's application [1987] OJ EPO 14: 'technical effect' patentable …
Merrill Lynch's application [1989] RPC 561: … so long as it really is 'technical'
Fujitsu's application [1997] RPC 608: British scepticism affirmed
Patent Office Guidelines on the interpretation of the Patents Act 1977, s. 1(2).
Draft Directive on the Patentability of Computer-Implemented Inventions COM (2002) 92

Purposive construction of claims
Catnic v. Hill & Smith [1982] RPC 183
Improver Corporation v. Remington [1990] FSR 181
Protocol to Article 69 of the European Patent Convention
PLG Research v. Ardon [1995] FSR 116
Assidoman v. Multipack [1995] RPC 321
Kastner v. Rizla [1995] RPC 585
Raychem's patents [1998] RPC 31
Pharmacia Corporation v Merck Co. Inc, [2002] RPC 41
Hewlett Packard v. Waters, 10 May 2002 [2002] EWCA Civ 612: you can't import words into a patent claim in order to interpret them

Construction of claims and "file wrapper estoppel"
Celltech Chiroscience v Medimmune 17 July 2003 [2003] EWCA Civ 1008

Infringement
Patents Act 1977, s. 60(1) and (2). "Primary" and "secondary" infringement.
Menashe Business Mercantile v William Hill [2003] RPC 31

Exhaustion of rights
Discovision Associates v. Disctronics [1999] FSR 196

Defences and Euro-defences
Philips Electronics v. Ingman [1999] FSR 112
United Wire v. Screen Repair Services, [2001] FSR 24
Stena Rederi AG v Irish Ferries [2003] EWCA Civ 66
Cook, T "Experimental Use as an Exception to Patent Infringement", [1998/99] BioSLR 166-174

Remedies
Injunction; damages; account of profits; declarations; costs
General Tire v. Firestone Tyre [1972] RPC 457: general principles
Gerber Garments v. Lectra and the prospect of getting one's pound of flesh
Catnic Components v. Hill & Smith [1983] FSR 512, cf.Blayney t/a Aardvark, [2003] FSR 19
Hoechst Celanese v. BP [1999] RPC 203
CMI-Centers v. Phytopharm [1999] FSR 235
Coflexip v. Stolt Comex (No. 2) [1999] FSR 473, reversed by CA [2001] RPC 9
Dyson v. Hoover (No. 2) [2001] RPC 544

Revocation (see also Patentability and Inventions)
Kirin-Amgen v Transkaryotic Therapies unrp aug 2002 - there's only one kind of "insufficiency"

Property rights and transactions
Chandler, P "Employees' Inventions: Inventorship and Ownership" [1997] EIPR 262
Supplementary Protection Certificates
Stoate, N "Supplementary Protection Certificates: Biogen v. SmithKline Beecham and its effect on procedure in the UK Patent Office" [1998] BioSLR 71
Farmitalia Carlo Erba's reference, ECJ, Case C-392/97, 16/09/99
BASF v. Bureau voor de Industriele Eigendom, Case C-258/99, ECJ, 10 May 2001 (what is a 'product' for SPC purposes?)
Takeda Chemical Industries v Comptroller, 2 April 2003 [2003] EWHC 649
Employees' inventions
Patents Act 1977, ss. 39 to 43